Entries in patent infringement (22)


Apple V. Samsung: CAFC Appeal Decision - The Dissent

Further to our prior post concerning the recent CAFC Appeal Decision, on May 14, 2012, the Federal Circuit reversed and remanded the district court’s decision to deny a preliminary injunction to plaintiff Apple for its design patent D504,889 for a tablet.  The Federal Circuit affirmed the district court's decision denying a preliminary injunction with regard to two other design patents and a utility patent drawn to smartphones.

The dissent by circuit Judge O'Malley urged the majority to immediately enter a preliminary injunction for design patent D504,889.  The majority remanded the decision to the district court to complete the analysis of the balance of the hardship factors and the public interest factors, which were only performed for the smartphone patents by the district court.  The dissent argues that these factors favor Apple with respect to the tablet patent D504,889, and that this analysis should not be remanded to the district court, as the delay would further prejudice Apple.  In particular, Judge O'Malley stated on p. 2 of the dissent that:

the majority’s decision to remand this matter for further proceedings relating to the D’889 Patent is unwarranted because: (1) remand will cause unnecessary delay, which is inconsistent with the very purpose of preliminary injunctive relief; and (2) once we reject its validity analysis, the district court’s decision, taken in its entirety, reveals that all of the prerequisites for preliminary injunctive relief are satisfied. Remand is particularly inappropriate where, as here, both this court and the district court agree that Apple will suffer irreparable harm absent injunctive relief. The majority’s decision to remand for further proceedings will only exacerbate that harm.

Judge O'Malley emphasizes that injunctive relief is a "drastic remedy" and "exists for a reason to provide speedy relief from irreparable injury." Although Judge O'Malley acknowledges that the district court did not make any findings with regard to the balance of hardships and the public interest with respect to the tablet patent D504,889, Judge O'Malley argues that the record from the district court is complete and sufficient for determining that an injunction should be entered.  Of note, Judge O'Malley at pp. 11-12 of the dissent states:

As this court has recognized, “[a]lthough the public interest inquiry is not necessarily or always bound to the likelihood of success o[n] the merits, . . . absent any other relevant concerns . . . the public is best served by enforcing patents that are likely valid and infringed.” Abbott Labs. v. Andrx Pharm., Inc., 452 F.3d 1331, 1348 (Fed. Cir. 2006). So too here, because the record at this stage shows that the D’889 Patent is likely valid and infringed, and there are no other relevant concerns, the public interest is best served by granting a preliminary injunction.

Concerning the balance of hardships requirement, Judge O'Malley states at p. 10 of the dissent that the balance of hardships weighs in Apple's favor because it has an interest in enforcing its patent rights.  As we previously noted in our prior post, Samsung is rolling out the Galaxy Tab 2 10.1, which has a different bezel than the Galaxy Tab 10.1, and appears to be poised as a replacement in the marketplace.  Below is an image from Samsung's product page for the Galaxy Tab 2 10.1.

The design of the Samsung Galaxy Tab 2 10.1 is not identical to the Samsung Galaxy Tab 10.1N (see our prior post concerning the "Design Around" in Germany last year).  Since the Samsung Galaxy Tab 2 10.1 appears to be poised as a replacement in the marketplace, the court may view the balance of hardships as weighing further in Apple's favor because Samsung has already "designed around" the tablet patent D504,889 (presuming the Samsung Galaxy Tab 2 10.1 does not infringe the tablet patent D504,889).

Edward Tracy contributed to this post.


Apple V. Samsung: CAFC Appeal Decision

In December, 2011, Apple appealed Judge Lucy Koh's denial of a preliminary injunction in the pending lawsuit in the U.S. District Court for the Northern District of California with respect to four Apple patents:

D618,677, which is alleged to be infringed by Samsung's Infuse 4G and Galaxy S 4G smartphones;

D593,087, which is alleged to be infringed by Samsung's Infuse 4G and Galaxy S 4G smartphones;

D504,889, which is alleged to be infringed by Samsung's Galaxy Tab 10.1; and

7,469,381, which is alleged to be infringed by all four products (the three mentioned above and the Droid Charge).

The CAFC ruled on the appeal from the denial of a preliminary injunction on May 14, 2012, providing a mixed bag of results for Apple and Samsung.  This ruling follows oral arguments that took place on April 6, 2012.

As recited in the CAFC ruling on p. 15, “[a] plaintiff seeking a preliminary injunction must establish that he is likely to succeed on the merits, that he is likely to suffer irreparable harm in the absence of preliminary relief, that the balance of equities tips in his favor, and that an injunction is in the public interest,” citing to Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7, 20 (2008).  Also, as stated on pp. 15-16 of the CAFC ruling, "[t]he decision to grant or deny a preliminary injunction lies within the sound discretion of the district court, and we will not reverse its judgment absent an abuse of that discretion," citing to Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372, 1375 (Fed. Cir. 2009).

In summary, the CAFC acknowledges the heavy burden on Apple to make the case to convince the district court to grant a preliminary injunction, and the even heavier burden with respect to reversing the district court's decision.

The district court relied on varying rationales for denying a preliminary injunction.  However, a general theme in the opinion was Apple's failure to show irreparable harm (irreparable injury).  In particular, the CAFC affirmed (at least in part) the district court's denial of an injunction based on irreparable harm with respect to the D'667, D'087 and '381 patents. 

However, the CAFC rejected the district court's ruling that D'087 is likely anticipated by JP 1241638 (JP '638).  Specifically, the opinion at p. 22 states, "[w]hen the claimed portion of the side view is taken into account, the differences between the arched, convex front of the ’638 reference distinguish it from the perfectly flat front face of the D’087 patent," providing the following comparison image on p. 23:

Concerning D'889, the district court concluded the irreparable harm requirement had been satisfied, but denied injunctive relief because Apple had failed to establish a likelihood of success on the merits.  The CAFC disagreed with the district court, stating on p. 28 of the ruling that the relied on reference "Fidler" provided "a very different impression from the 'unframed' D'889 design." The following image was provided on p. 28 of the ruling.

Regarding the status of a preliminary injunction based on D'889, a determination as to the balance of hardships and the public interest was remanded to the district court.

There are several important items to take away from the CAFC ruling:

First: The CAFC ruling at pp. 16-17 states: "the district court was correct to require a showing of some causal nexus between Samsung’s infringement and the alleged harm to Apple as part of the showing of irreparable harm." In the context of design patents, where only a portion of a product may be claimed, a nexus may be more difficult to show because consumer demand may be less likely driven by that particular claimed portion of the design, than by the overall design of the product.  Nonetheless, Apple was still able to show the required nexus with respect to the alleged infringement of D'889.

Second: With respect to D'889, the district court may rule in favor of Apple and still grant a preliminary injunction with respect to D'889.  However, this may quickly become a moot issue because Samsung is rolling out the Galaxy Tab 2 10.1, which has a different bezel than the Galaxy Tab 10.1, and appears to be poised as a replacement in the marketplace.

Third: Apple's position concerning patent validity and infringement, at least concerning D'087 and D'889, is stronger.

Fourth: Irreparable harm is a requirement for a preliminary injunction - not for calculating damages and not a clear requirement for an exclusion order from the ITC (see Dennis Crouch's post on this issue at PatentlyO).  Therefore, the lack of irreparable harm (or at least a showing thereof) does not indicate Apple has a weak position for obtaining significant damages or an exclusion order.


Apple v. Samsung: Settlement Conference

FOSS Patents has published a list of the 50+ pending Apple-Samsung lawsuits spanning the globe.  Although the timely resolution of so many lawsuits may require divine intervention, Judge Lucy Koh (who is presiding over the lawsuits in the Northern District of California) "ordered the parties to comment on their availability for an Alternative Dispute Resolution (ADR) effort," as reported by FOSS Patents.  As a result of Apple's and Samsung's responses, U.S. Magistrate Judge Spero will now preside over a settlement conference on May 21-22, 2012, in San Francisco.


Digest of new and closed design patent cases from Mar. 19 to April 6, 2012

In light of the positive response we received from our earlier Design Patent Digest post, we decided to post another.  A table of newly filed and closed design patent cases from March 19, 2012, to April 6, 2012, including a handful of earlier cases not identified in our previous search, is posted here.  Over this three week period, we identified 20 new cases and 10 closed cases involving a design patent.

Some cases that we found particularly interesting are mentioned below.

The footwear design patent infringement suit, Skechers USA v. Children’s Place, which we previously reported, was dismissed without prejudice on March 28, 2012, following a settlement agreement.


Littel Fuse, Inc. filed suit in the Eastern District of Michigan alleging infringement of utility and design patents for electrical fuses.  Links to the patents at issue are included below.

D575,746 Blade Fuse and Fuse Element therefor

D584,239 Blade Fuse Element

8,077,007 Blade Fuse

7,928,827 Blade Fuse


Frito-Lay filed suit in the Eastern District of Texas alleging infringement of utility and design patents for apparatus and methods directed to making bowl-shaped tortilla chips.  The Eastern District of Arkansas dismissed the defendants’ declaratory judgment action against Frito-Lay after the Eastern District of Texas ruled that the defendants were subject to its jurisdiction and that venue was proper in Texas.  Links to the patents at issue are included below.

D459,853 Snack Piece Mold

6,610,344 Process for making a shaped snack chip

6,592,923 System and method for molding a snack chip

6,638,553 System and method for monolayer alignment snack chip transfer




Digest of new and closed design patent cases from Feb. 6 to Mar. 16, 2012

We have found it helpful, and interesting, to track newly filed and closed design patent cases on a weekly basis.  In hope that readers of our Protecting Designs Blog might benefit as well, we have tabulated our search results over the period from February 6 to March 16, 2012, and posted them here.

During this six week period, we identified 15 newly filed cases and 20 closed cases that assert a cause of action involving a design patent.  Of the closed cases identified, the average pendency of the litigation was 0.6 years, where the maximum and minimum pendencies were 1.6 years and 4 days, respectively.